Do you have the next big idea that you don’t want another entity to take? Do you want it trademarked but don’t know how to go about it? Are you worried about someone else racing you to it? If so, don’t delay in protecting your creation because trademarks define your brand.
Don’t let somebody steal your logo, slogan, phrase, word, domain name, or other design that your brand uses to identify itself to make it stand out. Or, if you’re worried about your trademarks or if someone wrongfully used them, you don’t have to let go of your intellectual property. Instead, take steps to protect your trademark rights and fight any trademark infringement.
The experienced trademark attorneys at Trestle Law are ready to assist you to help you establish and subsequently keep control of your valuable assets. To receive a no-strings complimentary consultation, contact Trestle Law today.
Are You a San Diego-Based Business Needing a Trademark Prosecution Attorney?
Trademarks are critical to the success of your company. They create brand recognition and help differentiate you from the competition. The experienced legal team at Trestle Law thoroughly understands the value trademarks carry.
If you are a San Diego business or anywhere within San Diego County, working with Trestle Law to secure your registered trademark could be beneficial to your business. As a full-service intellectual property law firm, our team commits itself to helping trademark owners maintain their legal rights over their valuable brands and products. Our entire law firm is passionate about intellectual property law – it’s all we do!
The San Diego trademark lawyers at Trestle Law are not afraid to pursue trademark litigation. We’ll pursue everything within the realm of trademark law to help your large or small business protect itself. We have done negotiations and secured deals with top global retailers. We also love to work with entrepreneurs, startups, and venture capitalists, especially those of women of color! Launching a new business is exhilarating, and our goal is to help companies get off to a good start in protecting everything for which they’ve diligently worked.
What Do California Brands Need to Know About the Trademark Prosecution Process?
Trademark prosecution describes the process to apply for federal protection of a proposed trademark with the United States Patent and Trademark Office (USPTO). Filing with the USPTO ensures you’re not just protecting your mark in California, but also across all 50 states.
At Trestle Law, our intellectual property attorneys are able to help new brand owners decide which trademarks to register, create a strategy for protecting them, and evaluate whether you may already be conflicting with other businesses. When working with our experienced intellectual property attorneys, we can help you:
- Perform trademark searches to see if a similar trademark already exists to avoid potential future infringement against you
- Assisting in developing a trademark that is uniquely your own, so you significantly decrease your chances of any disputes down the road
- Fill out, apply for, and represent you throughout the trademark registration process to make sure your application is filed correctly
- Determining if intended trademark is “use-based” (actively using it in commerce) or if you have the intent to use the mark, providing the U.S. Patent and Trademark Office with any necessary documentation and proper evidence
- Acting as attorney of record, we will help resolve any issues the USPTO may have with your application or questions they have about your intent to use your trademark
- This comes in the form of an official letter from the USPTO and is called an “office action.” Having an attorney working with you from the get-go on the trademark process greatly improves your chances this doesn’t happen.
While it is beneficial to work with an attorney, if you are in California and wish to register a trademark without any assistance, you can file your state application online, in person, or through the mail. Online will be your quickest process. However, we usually don’t recommend this route. Another option is to file directly with the USPTO, which is your better option. Whatever you choose, make sure you fill out all areas of the application.
Before you begin pursuing trademark protection, you’ll need to complete a series of tasks (essentially the tasks listed above that your attorney can complete for you) to make sure your trademark is not already in use, along with checking to see if it’s protectable. You’ll need to pay meticulous attention to detail so that your application is not denied. Also, it’s important to understand that you will need to pay a non-returnable processing fee, even if you receive a denial on your trademark registration application.
What Are the Benefits of Federal Trademark Registration?
The benefits of registering your trademark are immeasurable because it ensures your intellectual property will not only be protected in California but also nationwide. The USPTO will protect against the creation of similar trademarks to your own, and U.S. Customs can block counterfeits. Other benefits include:
- Preserving your right to use a trademark you created even if you’re not yet ready to be open for business
- Placing your trademark in an online database so that others are prevented from filing and registering the same or a similar mark
- Providing you with the right to pursue a trademark infringement case in federal court against intellectual property thieves who unlawfully use your trademark
- Establishing yourself as the owner can provide you with a competitive advantage against other businesses that do not have a registered trademark.
It is in your best interest to quickly register any trademarks you develop. Pursuing this protection through the submission of a trademark application ensures your competitors or other unsavory entities don’t misuse your trademark and cause damage to your brand.
What is the Madrid Protocol?
With ecommerce in a global market, it can seem trademarks have grown increasingly complex. You can start in California and then extend nationwide. Let’s take it one step further with international law.
The Madrid Protocol is one of the two treaties that make up the Madrid System, an international registration process for trademarks. Essentially, the Madrid protocol offers both individuals and businesses a cost-effective and efficient mechanism to protect their trademarks in various different countries with one single application and a singular set of fees. Sounds nice, right?
The Madrid Protocol also simplifies the management of a trademark after it is approved to be used internationally. Many businesses find this law beneficial, but it can be quite complex, especially when you are dealing with multiple countries, each with its own laws and regulations. Working with a knowledgeable intellectual property law firm can help you navigate any rough waters you encounter during the trademark registration process.
How to Protect Your Trademark
It’s important to understand that the USPTO doesn’t “police” trademarks. Their primary way of protecting your mark is by ensuring they do not issue any trademarks that are identical or too similar to your brand identifier.
Monitor Your Trademark
If you find another entity is using your trademark or one that looks awfully like yours, the first step is to send a cease and desist letter. If they do not stop using your trademark, you have the right to file a lawsuit against them.
Maintain Your Trademark
After your initial trademark application gets its approval, your registration is good for 10 years. During this timeframe, you must file what is called “maintenance documents” between the fifth and sixth year after your initial registration and then again between the ninth and tenth year. It’s super important to mark these deadlines on your calendar because if you do not file the required information, your trademark registration will be canceled.
Your trademark is not offered in perpetuity. At the 10-year point, you must take the steps to renew your trademark. This is critical because you do not want to put your company’s hard-earned intellectual property in jeopardy by allowing it to expire. If you let your trademark registration lapse, you run the risk of another company grabbing it after the cancellation and legally using it as its own service mark.
How Does the USPTO Judge the Likelihood of Confusion for Trademarks?
The USPTO judges the likelihood of confusion in several ways. First, it examines each federal registration trademark application it receives to ensure it is compliant with U.S. government law and the Trademark Rules of Practice. If it finds anything non-compliant, the application is likely to be refused. A common reason the USPTO refuses registration is due to a “likelihood of confusion”.
This occurs when a business or individual attempts to register a mark that is very similar to one listed in a previously registered trademark or a pending application with an earlier date stamp. This is especially true if the two business entities sell similar goods or services and it could confuse consumers as to which brand they are purchasing.
Similarity of Marks
One of the criteria the USPTO looks at to determine if a likelihood of confusion exists are similarity of marks which includes the appearance, impression, and sound (even if spelled differently) of a trademark. For instance, USPTO uses the example, “T. Markey” vs. “Tee Marquee” – you can see where confusion may arise. The same goes for logo (or other) appearances and impressions.
What it boils down to is if a trademark evokes an image of a particular brand in the minds of consumers, this constitutes a similarity of marks, and chances are the trademark application will be denied.
Relatedness of Goods and Services
Even when two trademarks are very similar, they might coexist if the businesses are vastly different in the types of goods and services they sell. A perfect example is the Major League Baseball team, the Washington Nationals, and the large drug store chain, Walgreens.
The two “W” logos are strikingly similar and, while the drug store chain had the logo first, it hasn’t pursued legal action. Interestingly enough, New York-based grocery chain Wegmans was also using a similar “W,” and Walgreens did pursue legal action against them for trademark infringement in 2010. A settlement was reached in 2011 where the grocery chain ceased use of their “W” in 2012 and retained some rights with the look of its logo. That being considered, Wegmans and Walgreens, while different businesses, do sell many of the same products, which likely contributed to this decision. Conversely, baseball is an entirely different market.
Trademark Services Trestle Law Provides
Trestle Law provides comprehensive trademark legal services, including but most definitely not limited to the following activities relating to registering and protecting trademarks.
- Federal and state trademark prosecution
- Monthly trademark enforcement
- Cease and desist letters
- International registrations and maintenance
- Trademark searches and assessments
Don’t see a service you need in this list? Just ask! We provide a wide array of trademark and other intellectual property-related services.
Do You Need Help? Contact a San Diego Trademark Prosecution Attorney
Every year, hundreds of thousands of business entities file trademark applications in the U.S., and many are not approved due to technical issues or a lack of a thorough search for existing trademarks. The USPTO recommends businesses hire an attorney if they are domestic and requires that you have a trademark attorney if you are international.
Working with a skilled California trademark attorney when you undergo trademark prosecution will be beneficial to you. At Trestle Law, we are ready to help you right from the start and make certain you cross all your proverbial T’s and dot your I’s. We will carefully go over your application or any other documentation to make certain everything is in order. Our attorneys are also always ready to litigate anyone who violates U.S. trademark law, potentially causing harm to your business.
Is Your Intellectual Property At Risk?
Trademarks are one of a business owner’s most valuable assets. If you are seeking to register and protect your trademark in all 50 states and want to obtain sound legal advice before you get started, the Trestle Law legal team is here to help you.
We are passionate about intellectual property law and are fully committed to helping you achieve total trademark protection and then working to help you keep it. Our law firm is based in San Diego County, but we serve businesses across the state of California, nationwide, and globally.
If you are worried your trademarks aren’t protected or if someone else is unlawfully using them, we can take steps to protect your company and fight the trademark infringement being committed against you.
Trestle Law offers a no-strings-attached discovery call to every potential client to help them decide if our friendly law firm is the right fit. Prior to our initial call, we’ll send you a variety of resources, such as PDFs, videos, and blog entries, for you to peruse beforehand, so you have plenty of information before we talk.
Ready to get started? Contact Trestle Law today. We’re happy to answer questions or set up a complimentary discovery call.